UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. MILWAUKEE ELECTRIC TOOL CORPORATION Petitioner

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MILWAUKEE ELECTRIC TOOL CORPORATION Petitioner v. IRWIN INDUSTRIAL TOOL COMPANY Patent Owner Patent No. 8,579,555 Issued: November 12, 2013 Inter Partes Review No. IPR Dated: June 22, 2015 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 8,579,555 UNDER 35 U.S.C On behalf of Milwaukee Electric Tool Corporation, inter partes review is respectfully requested for claims 1-34 of U.S. Patent No. 8,579,555, assigned to Irwin Industrial Tool Company (Patent Owner or PO ). i

2 TABLE OF CONTENTS I. Introduction p. 1 II. Mandatory Notices.p. 2 III. Payment of Fees.p. 3 IV. Grounds for Standing.p. 3 V. Identification of Challenge and Relief Requested.p. 3 VI. Summary of the 555 Patent..p. 4 VII. Claim Construction p. 7 VIII. Manner of Applying Prior Art to Every Claim.p. 15 A. Ground 1.p. 16 B. Ground 2.p. 26 C. Ground 3.p. 31 D. Ground 4.p. 36 IX. Conclusion p. 51 ii

3 LIST OF EXHIBITS Exhibit 1001 U.S. Patent No. 8,579,555 ( the 555 Patent ) Exhibit 1002 Declaration of James Pangerc Exhibit 1003 U.S. Patent No. 7,237,291 to Redford ( Redford ) Exhibit 1004 U.S. Patent No. 2,473,077 to Starbuck, Jr. ( Starbuck ) Exhibit 1005 U.S. Publication No. 2009/ to Singh ( Singh ) Exhibit 1006 Webster s Dictionary, 2009: fulcrum Exhibit 1007 Office Action dated March 5, 2013 from the prosecution history of the 555 Patent iii

4 I. Introduction Hole saws (often called hole cutters ) are used to remove large cylindrical pieces of material from a larger substrate. For example, when installing a doorknob in a door, a hole saw can be used to create a cylindrical hole in the door. After performing this operation, a cylindrical slug of material may be stuck inside the hole saw and need to be removed. U.S. Patent No. 8,579,555 ( the 555 Patent ) relates to hole saws that have multiple apertures into which an object (e.g., a screwdriver) can be inserted in order to remove slugs from the hole saw. The edges of the multiple apertures act as fulcrums against which the object can be leveraged by a user to pry the slugs out of the hole saws. The multiple apertures are axially spaced from each other in order to facilitate the prying of slugs at different axial locations on the hole saws. This basic concept is well known in the art, as evidenced by U.S. Publication No. 2009/ to Singh ( Singh ). The alleged point of novelty of the 555 Patent is connecting the multiple apertures with a slot that facilitates moving the object from one aperture to another without removing the object from engagement with the hole saw. However, the structure recited in the claims does not patentably distinguish over the structure in the prior art, such as U.S. Patent No. 7,237,291 to Redford et al. ( Redford ). Furthermore, the concept of moving an object from one aperture to another by way 1

5 of a slot connecting the apertures is a basic engineering principle and was well known to persons of ordinary skill in the art several years before the 555 Patent, as evidenced by Redford. For these reasons, Petitioners request that the Board grant this Petition and institute trial on all requested grounds. II. Mandatory Notices Under 37 C.F.R A. Real party-in-interest Milwaukee Electric Tool Corporation, its parent entities, Techtronic Industries Co. Ltd., and Techtronic Industries North America, Inc., and One World Technologies, Inc. are the Petitioners and real parties-in-interest in this proceeding. B. Related matters A petition for inter partes review is being filed concurrently by Petitioners for U.S. Patent No. 8,579,554 ( the 554 Patent ), which is the parent of the 555 Patent. The 554 Patent and the 555 Patent include claims of similar scope with substantial overlap. The 554 and 555 Patents are also the subject of Civil Action No. 3:15-cv-30005, filed January 8, 2015, in the U.S. District Court for the District of Massachusetts (Springfield Division). 2

6 C. Lead counsel, back-up counsel, and service information Lead Counsel Back-Up Counsel Back-Up Counsel Kevin P. Moran (Reg. No. 37,193) michaelbest.com Michael Best & Friedrich 100 East Wisconsin Ave. Milwaukee, WI J. Donald Best (pro hac vice admission to be requested) Michael Best & Friedrich 100 East Wisconsin Ave. Milwaukee, WI David J. Trautschold (Reg. No. 71,004) michaelbest.com Michael Best & Friedrich 100 East Wisconsin Ave. Milwaukee, WI III. Payment of Fees All fees for this petition are being made by credit card. Petitioners authorize the Patent and Trademark Office to charge Deposit Account No with any additional fees required for the Petition. IV. Grounds for Standing Petitioners certify that the 555 Patent is available for IPR and the Petitioners are not barred or estopped from requesting an IPR challenging the patent claims on the grounds identified in this Petition. V. Identification of Challenge and Relief Requested Petitioners hereby petition for IPR of claims 1-34 of the 555 Patent on the grounds set forth below, and request that claims 1-34 be found unpatentable as anticipated or obvious. A. Identification of prior art The 555 Patent issued from U.S. Application No. 13/006,080, which was filed on January 13, The 555 Patent is a continuation-in-part of U.S. 3

7 Application No. 12/687,065, filed January 13, 2010, which is now the 554 Patent. As such, the pre-aia Patent Act applies. U.S. Patent No. 7,237,291 ( Redford, Ex. 1003) issued July 3, 2007, and U.S. Patent No. 2,473,077 ( Starbuck, Ex. 1004) issued July 6, Redford and Starbuck are prior art under pre-aia 35 U.S.C. 102(b). U.S. Publication No. 2009/ ( Singh, Ex. 1005) was filed August 1, 2008 and published February 5, Singh is prior art under pre-aia 35 U.S.C. 102(e). B. Identification of statutory grounds Ground 1: Claims 1, 3-5, 14-18, 20-26, 29-30, and are anticipated under pre-aia 35 U.S.C. 102(b) by Redford. Ground 2: Claims 1-5, 14-30, and are obvious under pre-aia 35 U.S.C. 103(a) over Redford. Ground 3: Claims 2, 6-13, and are obvious under pre-aia 35 U.S.C. 103(a) over Redford in view of Starbuck. Ground 4: Claims 1-34 are obvious under pre-aia 35 U.S.C. 103(a) over Singh in view of Redford. VI. Summary of the 555 Patent The following provides a brief description of the invention and a statement regarding the level of ordinary skill in the art. 4

8 A. Brief description The 555 Patent discloses hole cutters with apertures in their side walls that define fulcrums for inserting and levering a tool, such as a screwdriver, to remove work piece slugs from the interiors of the hole cutters. Ex. 1001, 1: A hole cutter, or hole saw, it a type of cutter used in drilling circular holes in various materials, such as wood, metal, drywall, etc. Id. at 1: Also see Figs. 1 and 2 below from the 555 Patent. 5

9 The hole cutter includes a blade body that defines two axially-elongated apertures or slots 18 formed through the side wall 12 thereof. Id. at 5: [A]s shown in Fig. 1, each axially-elongated aperture or slot 18 includes three fulcrums 20A, 20B and 20C axially and angularly spaced relative to each other. Id. at 6: [A] common tool, such as a screw driver, can be inserted into the axially-extending aperture of slot 18, slipped into engagement with a respective fulcrum 20A, 20B or 20C, and manipulated as a lever against the respective fulcrum 20A, 20B or 20C to pry or push a slug out of the interior of the blade body 10. Id. at 6: Fig. 5 illustrates another embodiment of a hole cutter 300, shown below. The primary difference of the blade body 310 is that the axially-extending slots or apertures 318 define two fulcrums 320A, 320C instead of three fulcrums. Id. at 11:

10 B. Level of ordinary skill in the art A person of ordinary skill in the art as of the filing date of the 555 Patent would have had a Bachelor of Science degree (or higher) in an engineering field that emphasized mechanical technologies (e.g., mechanical engineering). The person of ordinary skill in the art would also have at least five (5) years of experience in power tool accessory design. Additional education or industrial experience may compensate for a deficit in one of the other aspects of the requirements stated above. Ex. 1002, 3. VII. Claim Construction Except as otherwise set forth in this Petition, Petitioners have adopted the broadest reasonable construction of the claims in light of the specification of the patent. Specific constructions are presented below, and all other terms can be given their plain and ordinary meaning. Petitioners expressly reserve the right to adopt alternative claim constructions in other proceedings that apply a different standard and/or in the event that Petitioners proposed claim constructions are not adopted by the Board. A. fulcrum The 555 Patent specifies that the invention relates to hole cutters with fulcrums for inserting and levering a tool to remove work piece slugs from the interiors of the hole cutters. Ex. 1001, 1: A fulcrum is defined in 7

11 Webster s Dictionary as a support on which a lever turns. Ex The broadest reasonable interpretation of this term, therefore, is a support (e.g., surface or edge of an aperture) on which a lever can be turned by a user. Ex. 1002, 8. In the claims of the 555 Patent, the construction of fulcrum is qualified by a support on which a lever can turn because a lever is not part of the claimed invention and does not always or constantly turn on each claimed fulcrum during its intended use. Rather, a lever only turns on a fulcrum when the lever is inserted into the aperture and engaged with the particular fulcrum by a user. When the lever is removed from the aperture (e.g., when performing a cut with the hole saw) or moved to a different fulcrum, the original fulcrum does not cease to be a fulcrum simply because the lever is no longer turning on that particular surface or edge of the aperture. B. at least one axially-elongated aperture The 555 Patent discloses a side wall 12 that extends around an axis of rotation X of the hole cutter to define a substantially cylindrical blade body. Ex. 1001, 4:67 to 5:2. The 555 Patent also discloses that the blade body 10 defines two axially-elongated apertures or slots 18 formed through the side wall 12 thereof. Id. at 5: The apertures 18 are illustrated in Fig. 1, and similar apertures 118, 218, 318 are illustrated in Figs It is noted that the illustrated apertures 18, 118 are not parallel to the axis X of the hole saw but do have an 8

12 axial component. Based on the words used in the claims, the detailed description, and the drawings of the 555 patent, the broadest reasonable interpretation of this phrase is an aperture that is longer than it is wide and has a component in the direction of the hole saw rotational axis. C. the blade body defines within the axially-elongated aperture a plurality of fulcrums (claim 1) In the Background, the 555 Patent specifies [o]ther prior art hole cutters have plural apertures that are axially and angularly spaced relative to each other These types of apertures may require moving the screwdriver or other lever from one aperture to another in order to lever a slug out of the hole cutter. Ex. 1001, 1: In contrast, the 555 Patent specifies as shown in FIG. 1, each axiallyelongated aperture or slot 18 includes three fulcrums 20A, 20B and 20C axially and angularly spaced relative to each other. Id. at [An] advantage of the hole cutters of the present invention is that they provide multiple fulcrums within the same axially-elongated aperture and thereby allow a user to work a slug out of the cutter by using multiple fulcrums without removing the lever from the aperture. Id. at 4: Based on the disclosure of the 555 Patent, the broadest reasonable interpretation of this phrase is that the blade body defines two or more fulcrums within the same aperture. 9

13 D. the axially-elongated aperture is configured to receive therethrough a lever for removing a work piece slug from an interior of the blade body (claims 1 and 22) The configured to receive therethrough a lever for removing a work piece slug language is functional and intended use. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114(II) (quoting Ex parte Masham, 2 USPQ2d 1647). Therefore, the functional and intended use language should not be given patentable weight beyond the structure that is capable of providing the function/use. If it is determined that this language is not functional and intended use, and will therefore be given patentable weight, the 555 Patent discloses a common tool, such as a screw driver, can be inserted into the axially-extending aperture or slot 18. Ex. 1001, 6: Based on the disclosure of the 555 Patent, the broadest reasonable interpretation of this phrase is an axially-elongated aperture that is capable of receiving therethrough a lever for removing a work piece slug from an interior of the blade body by a user. Although configured to is occasionally construed to mean something narrower than capable of (see, e.g., Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349), capable of is a more suitable construction in this 10

14 particular case. It is common for a user to use any available aperture on a hole cutter for slug removal. Ex , 9. Simply because a particular aperture is not explicitly identified as being designed to receive a lever for slug removal does not mean a user would not have inserted a lever into the aperture. Id. A narrower construction of configured to would allow PO to receive a patent on a device that is structurally identical to devices found in the prior art, but that PO could only differentiate on the ground that the prior art did not explicitly identify being used for a specific purpose (even though end users would have used the prior art for the same purpose). 1 E. a plurality of fulcrums configured for engaging the lever and levering slugs out of the interior of the blade body by applying a sufficient levering force against the fulcrums to lever a slug towards the cutting edge (claim 1) The configured for engaging the lever and for levering slugs out of the interior of the blade body by applying a sufficient levering force against the fulcrums to lever a slug toward the cutting edge language is a functional and an intended use of the tool. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not 1 Even if configured to is given a narrower construction, the grounds discussed in at least Section VIII(D) still apply because Singh explicitly discloses apertures designed to receive levers. 11

15 differentiate the claimed apparatus from the prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. MPEP 2114(II) (quoting Ex parte Masham, 2 USPQ2d 1647). Therefore, despite the functional and intended use language, for purposes of this Petition, the broadest reasonable construction must focus on the structure that is capable of providing the function/use. If it is determined that this language is not functional and intended use, and will therefore be given patentable weight, the 555 Patent discloses a common tool, such as a screw driver, can be inserted into the axially-extending aperture of slot 18, slipped into engagement with a respective fulcrum 20A, 20B or 20C, and manipulated as a lever against the respective fulcrum 20A, 20B or 20C to pry or push a slug out of the interior of the blade body 10. Ex. 1001, 6: The 555 Patent also discloses a user may insert a tool through one of the axially-extending slots 18, place the tip of the tool in contact with the side of the slug facing the cap (not shown) or the interior of the blade body 10, select the second fulcrum 20C located axially furthest from the cutting edge 14 by placing a distal part of the tool into contact with the fulcrum 20C, and apply a force to a proximate portion of the tool to use the tool and the fulcrum 20C to lever the slug towards the cutting edge 14 and out of the interior of the blade body 10. Ex. 1001, 7:65-8:6. Based on these disclosures in the 555 Patent, the broadest reasonable interpretation of this 12

16 phrase is a plurality of fulcrums capable of engaging the lever and capable of levering slugs out of the interior of the blade body by a user applying a sufficient levering force against the fulcrums to lever a slug toward the cutting edge. F. first means for engaging the lever and for levering slugs having thicknesses within a first range of thicknesses out of the blade body, and second means for engaging the lever and for levering slugs out of the blade body having thicknesses within a second range of thicknesses greater than the first range of thicknesses (claim 22), and third means for engaging the lever and for levering slugs out of the blade body having thicknesses within a range of thicknesses between the first and second range of thicknesses (claim 23) The first means, second means, and third means are means plus function elements under 35 U.S.C. 112, sixth paragraph. Claims that use the word means without further structure are presumed to invoke 112, sixth paragraph. See MPEP There is insufficient additional structure recited in claims 22 and 23 to remove these claim elements from the scope of 112, sixth paragraph. As such, these claims should be construed to cover the corresponding structure in the specification and equivalents thereof. The 555 Patent discloses the structure of the first means, second means, and third means as fulcrums defined by edges of openings in the side wall of the hole saw. With reference to the embodiment of Figs. 1-2, the 555 Patent discloses a common tool, such as a screw driver, can be inserted into the axially-extending aperture of slot 18, slipped into engagement with a respective fulcrum 20A, 20B or 13

17 20C, and manipulated as a lever against the respective fulcrum 20A, 20B or 20C to pry or push a slug out of the interior of the blade body 10. Ex. 1001, 6: With reference to the embodiment of Fig. 3, the 555 Patent discloses that a tool, such as a standard Phillips number 2 screwdriver, can be placed into contact with the curvilinear fulcrums 120A, 120B and 120C, and pivoted about a respective fulcrum 120A, 120B or 120C to lever a slug out of the interior of the blade body 110. Id. at 9: With reference to the embodiment of Fig. 4, the 555 Patent discloses [a]nother difference of the blade body 210 is in the shapes of the fulcrums 220A, 220B and 220C. Id. at 10: With reference to the embodiment of Fig. 5, the 555 Patent discloses [t]he primary difference of the blade body 310 is that the axially-extending slots or apertures 318 define two fulcrums 320A, 320C instead of three fulcrums. Id. at 11: Based on the disclosure of the 555 Patent, the broadest reasonable interpretation of this phrase is a first fulcrum, a second fulcrum, and a third fulcrum, each being defined by an edge of an opening in a sidewall of the hole saw and capable of a user engaging a lever to lever slugs out of the blade body, and equivalents thereof. 14

18 G. the blade body defines within the at least one aperture first means, and second means (claim 22) For the reasons discussed above in Sections VII(B) and VII(F), the broadest reasonable interpretation of this term requires that the blade body define the aboveconstrued first and second means with the aperture. H. edge of the aperture adjacent to the nonworking end of the hole cutter (claims 16 and 17) The 555 Patent discloses that [t]he fulcrums 20A, 20B and 20C are recessed edge surfaces of the side wall 12 of the blade body 10 that are formed on the edge of a respective axially-extending aperture or slot 18 that is adjacent to, or on the side of, the non-working end of the hole cutter. Id. at 6: As shown in Fig. 3 of the 555 Patent, the fulcrums 120A-C are located on an edge of the corresponding slot 118 that is located closer to the non-working end compared to an opposing edge of the slot 118. Based on this disclosure, the broadest reasonable interpretation of edge of the aperture adjacent to the nonworking end of the hole cutter in claims 16 and 17 is the edge of the aperture that is closer to the nonworking end of the hole cutter. VIII. Manner of Applying Prior Art to Every Claim Four separate grounds of unpatentability are provided below. 15

19 A. Ground 1: Claims 1, 3-5, 14-18, 20-26, 29-30, and are anticipated by Redford Figs. 1, 2, and 4 below are from Redford, which discloses a combined nut recess cleaner and nut driver tool 10. Ex. 1002, 10. The tool 10 includes a body 20, a nut driver 40, and a debris removing portion 100 having a cleaning flange 60 that is a hole saw. Id. The cleaning flange 60 includes an S-shaped channel 56 that defines multiple fulcrums that are capable of receiving a lever for levering objects (e.g., slugs) out of the flange 60 by a user. Id. Independent Claim 1 Independent Claim 22 Redford A hole cutter, comprising: A hole cutter, comprising: Redford discloses a debris removing portion 100 comprising a cleaning flange 60 that is 16

20 a substantially cylindrical blade body defining a cutting edge; and at least one axiallyelongated aperture formed through the blade body and spaced from the cutting edge such that a portion of the blade body extends between the cutting edge and the axially-elongated aperture, wherein the axiallyelongated aperture is configured to receive therethrough a lever for removing a work piece slug from an interior of the blade body, and the blade body defines, within the axiallyelongated aperture, a plurality of fulcrums configured for engaging the lever and levering slugs out of the interior of the blade body by applying a sufficient levering force against the fulcrums to lever a slug towards the cutting edge, a substantially cylindrical blade body defining a cutting edge; and at least one axiallyelongated aperture formed through the blade body and spaced from the cutting edge such that a portion of the blade body extends between the cutting edge and the axially-elongated aperture, wherein the at least one axially-elongated aperture is configured to receive therethrough a lever for removing work piece slugs from an interior of the blade body, and the blade body defines within the at least one aperture first means axially spaced adjacent to the cutting edge for engaging the lever and for levering slugs having thicknesses within a first range of thicknesses out of the blade body by applying a sufficient levering force against the 17 essentially a hole saw. Ex. 1003, 4:10-12, The debris removing portion 100 is cylindrical and has a bottom portion terminating in an edge 62 comprising a plurality of rigid teeth. Ex. 1003, 4: The debris removing portion 100 [is] configured with a generally S-shaped channel 56 therethrough. Ex. 1003, 5: The channel 56 is spaced from the edge 62 such that a portion of the cleaning flange 60 extends between the edge 62 and the channel 56. Ex. 1003, Fig. 2 The S-shaped channel 56 is capable of receiving a lever for removing workpiece slugs. Ex. 1002, 10. The S-shaped channel 56 having an upper depression 53 and a lower depression 55. Ex. 1003, 5:44-46 and Fig. 2 As shown in the enlarged an annotated Fig. 2 below, the cleaning flange 60 defines within the S- shaped channel 56 a plurality of fulcrums

21 the plurality of fulcrums including one of: i) a first fulcrum axially spaced adjacent to the cutting edge, and a second fulcrum spaced further away from the cutting edge than the first fulcrum; and ii) a first fulcrum axially spaced adjacent to the cutting edge, a second fulcrum axially spaced further away from the cutting edge than the first fulcrum, and a third fulcrum axially spaced between the first and second fulcrums. second means 2 to lever a slug towards the cutting edge, and second means axially spaced further away from the cutting edge than the first means for engaging the lever and for levering slugs out of the blade body having thicknesses within a second range of thicknesses greater than the first range of thicknesses by applying a sufficient levering force against the second means to lever a slug towards the cutting edge. where a user can apply a levering force. Ex. 1002, 10. Annotated Fig. 2 from Redford 2 The term the second means lacks antecedent basis. For purposes of this Petition, Petitioners are assuming this term should be the first means. 18

22 As shown in the annotated figure above, the S-shaped channel 56 of Redford includes three fulcrums. The lower depression 55 is a first fulcrum that is axially spaced adjacent to the edge 62. The upper depression 53 is a second fulcrum that is axially spaced further away from the edge 62 than the lower depression 55. A third fulcrum is axially spaced between the lower and upper depressions 55, 53. These surfaces are fulcrums because they are supports on which a user can turn a lever. Ex. 1002, 10. Redford explicitly discloses that the cleaning flange 60 (which is identified as a hole saw) is removable from the nut driver 40. In particular, Redford states it is expressly envisioned that the present invention could comprise a number of separate pieces, for instance the cleaning flange could be removable (the user could unfasten the cleaning flange piece from the body/nut driver piece). Ex. 1003; 6:6-10. Once removed from the nut driver 40, it would have been apparent to a person of ordinary skill in the art that the cleaning flange 60 is connectable to a different drive structure for use as a conventional hole saw. Ex. 1002, 11. For example, a hole saw arbor could have been threaded or otherwise attached to the stem extending upward from the cleaning flange 60 (i.e., the structure that received the body 20). Id. Alternatively, the cleaning flange 60 could have been attached to and driven by the same body 20 and pin 54 as before, but without the nut driver

23 Id. During either use, slugs would inherently have become lodged in the cleaning flange 60 as the cleaning flange 60 cuts through a work piece, and the S-shaped channel 56 would have been used by a user to pry or lever the slugs out of the cleaning flange 60. Id. at 12. Although the illustrated cleaning flange 60 includes a depth gauge 70, which may inhibit slugs from fully entering the cleaning flange 60, Redford explicitly discloses that some embodiments will not have a depth gauge. Ex. 1003, 5: Concerning the claim language axially-elongated aperture is configured to receive therethrough a lever, as noted above this is intended use and functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than in terms of function. See MPEP 2114(I) (emphasis added); In re Schreiber, 128 F.3d 1473, Therefore, the intended use for the axially-elongated aperture does not differentiate the claim from Redford. Even if the intended use and functional language is given patentable weight, the S-shaped channel 56 of Redford has an axial component and is capable of receiving a lever for removing a work piece slug. Ex. 1002, 13. Persons of ordinary skill in the art commonly inserted screwdrivers into any suitable openings in hole saws to pry slugs out of the hole saws. Id. at 9. Because the channel 56 of 20

24 Redford can receive the pin 56 (which is a solid, cylindrical object), the channel 56 can also receive a screwdriver (which is also typically a solid, cylindrical object and described in the 555 Patent as being a suitable lever) such that a user could lever a slug out of the hole saw. The claim limitation for engaging the lever and for levering slugs is also intended use and functional language, and therefore does not differentiate the claim from Redford. Even if this limitation is given patentable weight, the lower depression 55, the upper depression 53, and the third fulcrum of Redford are surfaces on which a lever can turn, and thus they are fulcrums capable of engaging a lever to facilitate a user levering slugs out of the interior of the cleaning flange 60. Ex. 1002, 10. Dependent Claim 3 A hole cutter as defined in claim 1, wherein the first fulcrum is located at approximately one end of the aperture, and the second fulcrum is located at approximately an opposite end of the aperture relative to the first fulcrum. The lower depression 55 of Redford is located at approximately one end of the S-shaped channel 56, and the upper depression 53 is located at approximately an opposite end of the S-shaped channel 56 relative to the lower depression 55. Dependent Claim 4 Dependent Claim 24 A hole cutter as defined in claim 3, A hole cutter as defined in claim 23, wherein the second fulcrum is axially wherein the second means is angularly spaced and angularly spaced around a spaced relative to the first means around circumference of the blade body relative a circumference of the blade body, and to the first fulcrum, and the third the third means is angularly spaced fulcrum is axially spaced between the between the first and second means 21

25 first and second fulcrums and angularly spaced around the circumference of the blade body. around the circumference of the blade body. As shown in annotated Fig. 2 above, the upper depression 53 of Redford is axially spaced and angularly spaced around a circumference of the cleaning flange 60 relative to the lower depression 55, and the third fulcrum is axially spaced and angularly spaced between the depressions 53, 55 around the circumference of the cleaning flange 60. Dependent Claim 5 Dependent Claim 25 A hole cutter as defined in claim 1, A hole cutter as defined in claim 24, wherein the third fulcrum is located wherein the third means is axially and approximately midway between the first angularly spaced approximately midway and second fulcrums. between the first and second means. As shown in annotated Fig. 2 above, the third fulcrum of Redford is axially and angularly spaced approximately midway between the lower and upper depressions 55, 53. Furthermore, the 555 Patent does not define the term approximately. The 555 Patent also does not identify in which direction the third means is approximately midway between the first and second means. Given its broadest reasonable interpretation, and referring to annotated Fig. 2 from Redford above, the third fulcrum of Redford is approximately midway between the depressions 55, 53, as illustrated in annotated Fig. 2 above. Ex. 1002, 14. Dependent Claim 14 Dependent Claim 29 A hole cutter as defined in claim 1, A hole cutter as defined in claim 23, 22

26 wherein each fulcrum is defined by a fulcrum surface oriented substantially parallel to the cutting edge. wherein at least a portion of each of the first, second and third means is substantially parallel to the cutting edge. As shown in annotated Fig. 2 above, a surface or portion of each of the lower depression 55, the upper depression 53, and the third fulcrum of Redford is oriented substantially parallel to the edge 62. Dependent Claim 15 A hole cutter as defined in claim 14, wherein the fulcrum surface is rectilinear, curvilinear or both. As shown in annotated Fig. 2 above, each of the lower depression 55, the upper depression 53, and the third fulcrum of Redford is defined by a surface that is at least partially curvilinear. Dependent Claim 16 A hole cutter as defined in claim 15, wherein the hole cutter includes a nonworking end on an opposite end of the blade body relative to the cutting edge, and each fulcrum is formed on an edge of the respective aperture adjacent to the nonworking end of the hole cutter. As shown in annotated Fig. 2 above, the debris removing portion 100 of Redford includes a non-working end on an opposite end of the cleaning flange 60 relative to the edge 62. The lower depression 55, the upper depression 53, and the third fulcrum are each formed on an edge of the S-shaped channel 56 that is closer to the non-working end. Dependent Claim 17 A hole cutter as defined in claim 14, wherein each of a plurality of fulcrums defines a recess in said edge of the respective aperture adjacent to the non-working 23

27 end of the hole cutter. Each of the lower depression 55, the upper depression 53, and the third fulcrum of Redford defines a recess in the edge of the S-shaped channel 56 that is closer to the non-working end. Dependent Claim 18 A hole cutter as defined in claim 1, wherein each fulcrum is defined by a plurality of fulcrum surfaces, including a first fulcrum surface oriented substantially parallel to the cutting edge, and at least one second fulcrum surface oriented substantially normal to the first fulcrum surface. Enlarged annotated Fig. 2 from Redford As shown in the enlarged, annotated figure above, each of the lower depression 55, the upper depression 53, and the third fulcrum of Redford is defined by a first surface that is oriented substantially parallel to the edge 62, and at least one second surface that is oriented substantially normal to the first surface. Dependent Claim 20 Dependent Claim 33 A hole cutter as defined in claim 1, A hole cutter as defined in claim 22, wherein the at least one axiallyelongated aperture is configured to elongated aperture is configured to wherein the at least one axially- permit the lever to be moved within the permit the lever to be moved within the aperture from one of the fulcrums to aperture from one of the means to another of the fulcrums without another of the means without removing removing the lever from the aperture. the lever from the aperture. 24

28 The limitation configured to permit the lever to be moved is intended use and functional language, and therefore does not differentiate the claims from Redford. Even if these limitations are given patentable weight, after Redford s hole saw is removed from the body/nut driver piece, the S-shaped channel 56 is capable of permitting a lever to be moved between the upper depression 53 and the lower depression 55 without removing the lever from the channel 56. Ex. 1002, 13. Dependent Claim 21 Dependent Claim 34 A hole cutter as claimed in claim 1, A hole cutter as claimed in claim 22, wherein the fulcrums are configured to wherein the fulcrums 3 are configured receive therethrough a lever capable of to receive therethrough a lever capable levering slugs from the blade body. of levering slugs from the blade body. The limitation capable of levering slugs is intended use and functional language, and therefore does not differentiate the claims from Redford. Even if these limitations are given patentable weight, the lower depression 55, the upper depression 53, and the third fulcrum of Redford are all capable of receiving a lever for a user to lever slugs out of the hole saw. Ex. 1002, The term fulcrums lacks antecedent basis. For purposes of this Petition, Petitioners are assuming claim 34 should either depend from claim 26 or be amended to recite first and second means instead of fulcrums. 25

29 Dependent Claim 23 A hole cutter as defined in claim 22, further including third means axially spaced between the first and second means for engaging the lever and for levering slugs out of the blade body having thicknesses within a range of thickness between the first and second range of thicknesses. As shown in annotated Fig. 2 above, Redford discloses a third fulcrum that is axially spaced between the lower and upper depressions 55, 53. Dependent Claim 26 A hole cutter as defined in claim 23, wherein each of the first, second and third means is a respective fulcrum. Each of the lower depression 55, the upper depression 53, and the third fulcrum of Redford is a fulcrum because each is a support on which a lever can turn. Ex. 1002, 10. Dependent Claim 30 A hole cutter as defined in claim 22, wherein the at least one axially-elongated aperture defines an axially-elongated slot. As shown in annotated Fig. 2 above, the S-shaped channel 56 of Redford includes an axially-elongated slot. B. Ground 2: Claims 1-5, 14-20, and are obvious over Redford If independent claims 1 and 22 are not considered to be anticipated by Redford due to the functional and intended use language noted in Ground 1 or in the event Redford s cleaning flange 60 is not considered to be a hole cutter, these claims would still be obvious in view of Redford. This Ground 2 is not redundant to Ground 1 because Ground 1 depends on particular constructions of the 26

30 configured to and hole cutter language in the claims in order to show anticipation of the claim elements, while Ground 2 is not so strict and instead shows that one or ordinary skill in the art would find such limitations obvious. It would have been obvious to use the cleaning flange 60 as a conventional hole saw because Redford explicitly states that the cleaning flange 60 is essentially a hole saw. Ex. 1003, 4:61-63; Ex. 1002, 15. In addition, Redford explicitly states that the cleaning flange 60 is removable from the nut driver 40 by a user. Ex. 1003, 6:6-10. In this regard, one of ordinary skill in the art would have found it obvious to use Redford s cleaning flange as a conventional hole saw. Ex. 1002, 15. When used as a conventional hole saw, slugs would inevitably get caught in the cleaning flange 60. Id. at 16. A user would have found it obvious to insert a lever (e.g., a screwdriver) into the S-shaped channel 56 to lever the slugs out of the flange 60 because using openings in the side of a hole saw to lever slugs was well known when the 555 Patent was filed. Ex. 1001, 1:35 to 2:4; Ex. 1002, 16. As noted above in Ground 1 with regard to claims 5 and 25, Redford discloses a third fulcrum located approximately midway between the other two fulcrums 53, 55. However, if the third fulcrum is not considered to be approximately midway, it would have been obvious to a person of ordinary skill 27

31 in the art to position the third fulcrum midway between the fulcrums 53, 55 in order to create evenly spaced steps. Ex. 1002, 14. Elements of claims 3-4, 14-18, 20-21, 23-24, 26, 29-30, and are found in the prior art and are obvious for the same reasons provided above in Ground 1. Dependent Claim 2 Dependent Claim 32 A hole cutter as defined in claim 1, A hole cutter as defined in claim 22, further comprising a plurality of the wherein the blade body defines a axially-elongated apertures angularly plurality of axially-elongated apertures spaced relative to each other. formed through the blade body and angularly spaced relative to each other about the blade body. Although Redford only explicitly discloses one S-shaped channel 56, it would have been obvious to a person of ordinary skill in the art to provide a plurality of S-shaped channels in the cleaning flange 60 because such a modification merely involves a duplication of parts. See In re Harza, 274 F.2d 669; MPEP (VI)(B). In fact, the number of slots is largely a matter of the size of the hole saw, which was well within the understanding of one of ordinary skill in the art at the time of the invention. Ex. 1001, 2:29-32 and 5:46-65; Ex. 1002, 17. Furthermore, it would have been desirable to provide two S-shaped channels 56 in the cleaning flange 60 of Redford to receive opposite ends of the pin 54. Ex. 1002, 18. With such an arrangement, the pin 54 would have been supported at both ends, which is more symmetrical and stable and would provide a smoother 28

32 operating movement of the pin 54 in the channel 56. Id. Providing a plurality of S-shaped channels 56 in the cleaning flange 60 is, therefore, obvious. Id. Dependent Claim 19 A hole cutter as defined in claim 1, wherein the axially-elongated aperture defines a minimum width of about 0.27 inch to allowance insertion of a number 2 screwdriver therethrough. Although Redford does not explicitly disclose a width of the S-shaped channel 56, the claimed dimension is merely a design choice that is only dependent on the size of the pin being used, and thus would have been obvious to a person of ordinary skill in the art. 4 Ex. 1002, 19. In addition, the 555 Patent does not disclose any special benefit or criticality for this dimension, other than being large enough to allow insertion of a number 2 screwdriver. See Ex. 1001, Dependent Claim 27 A hole cutter as defined in claim 23, wherein the first means is axially spaced from the cutting edge a first distance within a range of about 1/2 inch to about 1 inch, the second means is angularly spaced relative to the first means and is axially 4 During prosecution of the 555 Patent, the Examiner rejected claims 10 (then claim 11), 11 (then claim 12), 12 (then claim 13), 13 (then claim 14), 19 (then claim 20), 27 (then claim 28), and 28 (then claim 29) as being an obvious matter of design choice. See Ex. 1007, pages 7-9. PO presented arguments against the rejection, but there is no indication that the arguments were persuasive. Independent claims 1 and 22, from which these claims depend, were allowed for other reasons. 29

33 spaced from the cutting edge a second distance within a range of about 1 1/2 to about 2 inches, and the third means is angularly and axially spaced between the first and second means and is axially spaced from the cutting edge a third distance within a range of about 1 inch to about 1 1/2 inches. Although Redford does not explicitly disclose how far the lower depression 55, the upper depression 53, and the third fulcrum are spaced from the edge, the claimed distances are merely a design choice that are only dependent on the sizes of the various components and are thus obvious. A hole cutter commonly has a height (or depth) of about 2 inches. Ex. 1002, 20. Since the claimed means are formed in the body of the hole cutter, the means must be located on the hole cutter a distance more than 0 inches away from the cutting edge, but less than 2 inches away from the cutting edge. The distances recited in claim 24 provide for generally equal spacing along the height of the hole cutter. The actual values of these distances are not critical and are merely design choices that would have been obvious to a person of ordinary skill in the art. See Gardner v. TEC Syst., Inc., 725 F.2d 1338; MPEP (IV)(A). 5 Ex. 1002, 21. Dependent Claim 28 A hole cutter as defined in claim 27, wherein the first means is for levering slugs having thicknesses of less than about 1/2 inch, the third means is for levering slugs having thicknesses of less than about 1 inch, and the second means is for levering slugs having thicknesses of less than about 2 inches. 5 See also footnote 4. 30

34 These limitations are intended use and functional language. The claimed means are configured for a user levering out the particular thicknesses of slugs due to the axial spacing of the means defined in claim 27. Since the structural limitations recited in claim 27 are merely design choices and obvious as noted above in connection with claim 27, the intended use and functional limitations defined in claim 28 that rely on those structural limitations do not differentiate the claim from Redford. See In re Schreiber, 128 F.3d 1473, ; MPEP 2114(I). 6 C. Ground 3: Claims 2, 6-13, and are obvious over Redford in view of Starbuck Starbuck discloses a trepanning tool, which is a type of hole cutter, adapted to cut a relatively large hole through wood or metal flooring or side walls of a building. Ex. 1004, 1:1-4; Ex. 1002, 22. The tool includes a cylindrical hollow member 10 having a series of cutting teeth 12 and two or more slots 22. Ex. 1004, 2:3-4; Ex. 1002, 22. The slots 22 exemplify a conventional, well-known slot configuration in a hole cutter. Ex. 1002, 22. The slots 22 are angled so that the cuttings produced by the teeth 12 are guided upwardly by rotation of the tool during its operation. Ex. 1004, 1:54 2:3. 6 See also footnote 4. 31

35 Redford modified in view of Starbuck It would have been obvious to a person of ordinary skill in the art to modify Redford in view of Starbuck because such a combination simply involves the use of a known technique to improve a similar device in the same way, with predictable results. See KSR v. Teleflex, 550 U.S. 398, 417; MPEP 2143(I)(C). More specifically, Redford and Starbuck are both directed to hole cutters with slots. Ex. 1002, 23. A person of ordinary skill in the art would have found it obvious to add the slots 22 of Starbuck to the hole saw of Redford to aid in the removal of the cuttings, as discussed in Starbuck. Ex. 1004, 1:8-10; Ex. 1002, 24. Instead of machining both the Redford slot and the Starbuck slot as two separate slots in a hole saw, it would have been obvious to a person of ordinary skill in the art to merge the two slots in order to reduce the number of slots that need to be machined into the hole saw, thus reducing manufacturing cost and improving the sidewall strength of the hole saw. Ex. 1002,

36 Dependent Claim 2 Dependent Claim 32 A hole cutter as defined in claim 1, A hole cutter as defined in claim 22, further comprising a plurality of the wherein the blade body defines a axially-elongated apertures angularly plurality of axially-elongated apertures spaced relative to each other. formed through the blade body and angularly spaced relative to each other about the blade body. As noted above in Ground 2, Redford only explicitly discloses one S-shaped channel 56. Claims 2 and 32 would have been obvious for the reasons noted above in Ground 2. In addition, Starbuck discloses that it is well known to provide two or more slots in a hole cutter, depending on the diameter of the hole cutter. See Ex. 1004, 2:3-5. It would have been obvious to provide a plurality of S-shaped channels 56 in the cleaning flange 60 of Redford in view of Starbuck because such a modification simply involves the use of a known technique to improve a similar device in the same way. See MPEP 2143(I)(C). Dependent Claim 6 Dependent Claim 31 A hole cutter as defined in claim 1, A hole cutter as defined in claim 22, wherein the hole cutter defines a wherein the hole cutter defines a direction of rotation that is a cutting direction of rotation that is a cutting direction of the cutting edge, and the direction of the cutting edge, and the axially-elongated aperture defines a first axially-elongated aperture defines a first end axially spaced adjacent to the end axially spaced adjacent to the cutting edge, and a second end axially cutting edge, and a second end axially spaced further away from the cutting spaced further away from the cutting edge than the first end and angularly edge than the first end and angularly spaced relative to the first end in a spaced relative to the first end in a direction opposite to the cutting direction opposite the cutting direction. direction. 33

37 Hole cutters typically have a direction of rotation that is a cutting direction. Ex. 1002, 26. When Redford is modified in view of Starbuck, the modified channel 56 defines a first end axially spaced adjacent to the edge 62, and a second end axially spaced further away from the edge 62 than the first end and angularly spaced relative to the first end in a direction opposite to the cutting direction. Dependent Claim 7 Dependent Claim 8 Dependent Claim 9 A hole cutter as defined in claim 6, wherein the axially-elongated aperture defines an axiallyelongated slot oriented at an acute angle relative to an axis of the blade body. A hole cutter as defined in claim 7, wherein the acute angle is at least about 30. A hole cutter as defined in claim 8, wherein the acute angle is within a range of about 35 to about 60. As shown above, when Redford is modified in view of Starbuck, the modified channel 56 is oriented at an angle of about 40 relative to an axis of the debris removing portion 100. The angle of the modified channel 56 is similar to, but slightly different than the slot 22 of Starbuck to maintain the original spacing of the fulcrums 53, 55 of Redford. Dependent Claim 10 Dependent Claim 11 A hole cutter as defined in claim 7, A hole cutter as defined in claim 6, wherein the first distance of the first wherein the first fulcrum is axially fulcrum is configured for levering slugs spaced from the cutting edge a first having thicknesses of about 1/2 inch or distance within a range of about 1/2 inch less, the third distance of the third to about 1 inch, the second fulcrum is fulcrum is configured for levering slugs angularly spaced relative to the first having thicknesses of about 1 inch or fulcrum and is axially spaced from the less, and the second distance of the cutting edge a second distance within a second fulcrum is configured for range of about 1 1/2 to about 2 inches, levering slugs having thicknesses of and the third fulcrum is angularly and 34

38 about 1 1/2 inch or less. axially spaced between the first and second fulcrums and is axially spaced from the cutting edge a third distance within a range of about 1 inch to about 1 1/2 inches. Claims 10 and 11 are similar to claims 28 and 27, respectively. As a result, the reasoning applied above with respect to claims 28 and 27 in Ground 2 also applies to claims 10 and 11, and is not repeated for the sake of brevity. 7 Dependent Claim 12 A hole cutter as defined in claim 6, wherein the first end is axially spaced from the cutting edge a first distance within a range of about 15/100 inch to about 3/8 inch. Starbuck discloses that that the helical slots 22 will be extended from adjacent the cutting edges 12 substantially to the point of attachment of the head 14. Ex. 1004, 2: Similar to Starbuck, the channel 56 of modified Redford is axially spaced from but close to the edge 62. The actual distance (i.e., between 15/100 inch and 3/8 inch) is merely a design choice that would have been obvious to a person of ordinary skill in the art. 8 Ex. 1002, 27. The 555 Patent does not disclose any special benefit for this dimension, other than being large/thick enough to provide strength, yet small/thin enough to allow chip egress. See Ex. 1001, 8:63 7 The terms the first distance, the third distance, and the second distance in claim 10 lack antecedent basis. For purposes of this Petition, Petitioners are assuming claim 10 should depend from claim See also footnote 4. 35